UK Ⓓesign registration marking - time for a rethink?
In the context of design registration protection covering the UK, various legislation exists which makes some of the remedies against infringement of a design registration conditional on whether the defendant or infringer had knowledge of the design registration in question.
For instance, if a defendant can show that they innocently infringed the relevant design registration, because they were not aware of its existence, this defence can limit the extent of damages which might otherwise by recoverable against the infringer during infringement proceedings (see Section 24B(1) UK Registered Designs Act 1949). Similarly, noting intentional infringement of a registered design covering the UK, in a commercial context, can in some instances be a criminal offence (see Section 35ZA(1) UK Registered Designs Act 1949), a defendant may be able to avoid a conviction under this legislation by showing that they did not have an awareness that the design in question was formally registered.
For the above reasons therefore, showing that a design is covered by a design registration, or at least giving an indication that this is the case, can be crucial in any subsequent infringement proceedings if the maximum remedies are to be enforced against a potential infringer.
One way to show that a design is covered with design registration protection is to mark the relevant product/design with language which expressly notes the number of the design registration in question, for instance: “Product/Design covered by UK Registered Design: XXXXXX” (where “XXXXXX” is the design registration number).
There are however many instances where such verbose language is simply not practical, for instance in respect of a design registration which is directed to a logo, or possibly some other relatively small component or design which does not lend itself to such extensive marking.
Provisions should therefore be made which allow the use of an appropriate symbol for indicating that a design is covered with an associated design registration. This would then be in the same way that the UK allows for a © symbol to be used to indicate the presence of copyright, and an ® symbol to indicate the presence of a registered trade mark.
A potential contender for showing the existence of a design registration could be through the usage of a Ⓓ symbol (a capital letter "D" in a circle), which is a symbol that is already formally recognised in Canada as being that which indicates the existence of registered design protection for a given product (see Section 17(2) Industrial Design Act of Canada).
Whatever the mechanism that might ultimately be used, it does seem that UK design registration holders should be able to more easily indicate the existence of their rights in the same way that is currently possible for copyright and trade marks.
Perhaps now more than ever, a wider discussion on this point is prudent, noting UKIPO is currently assessing whether potential change is needed to the UK design registration landscape - following the recent consultation that was held (see our previous article on this subject).
For those keen to implement any changes regarding how UK registered design protection may be legally indicated on a given design/product, now is the time to holler!